
The Düsseldorf Local Division has today ruled that the UPC has jurisdiction to hear an infringement action in respect of the UK part of a European patent, if the defendant is domiciled in a UPCA Contracting Member State.
The decision relates to a UPC action brought by Fujifilm against Kodak for the infringement of a European patent in force in both Germany and UK. The action was brought on the basis that the defendants were domiciled in Germany (a contracting member state), and this was a factor in the Court deciding that it had jurisdiction to decide on infringement of the corresponding UK part of the European patent, despite the UK not being a contracting member state of the UPC.
The asserted patent was found to be invalid, and therefore the German part of the European patent was revoked. The Court acknowledged that it did not have jurisdiction to revoke the UK part of the patent (and so this survives). However, the Court held that it could not find the infringement action to be successful in respect of the UK, on the assumption that its invalidity finding on the German part of the patent would apply also to the UK part of the patent.
Accordingly, the entire infringement action for both the UK and Germany was dismissed.
This decision emphasises the wide-ranging enforcement powers of the Court. If the decision is upheld by the UPC’s Court of Appeal, this could mean that parties may be able to bring actions before the Court in respect of acts which infringe a European patent, even in non-contracting states (such as Spain and Poland) or even non-EU states (such as the UK, Switzerland, or Turkey), so long as the European patent is in force, and the infringing parties are themselves domiciled in a UPCA Contracting Member State.